Passionate about IP! Since June 2003 the IPKat weblog has covered copyright, patent, trade mark, info-tech and privacy/confidentiality issues from a mainly UK and European perspective. The team is David Brophy, Merpel, Jeremy Phillips, Eleonora Rosati, Nicola Searle, Darren Smyth, Annsley Merelle Ward and Neil J. Wilkof. You're welcome to read, post comments and participate in our community. You can email the Kats here

For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.

Birgit Clark is on Sabbatical till the end of the year

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Sunday, 30 September 2007

The decision of the Court of First Instance of the European Communities was handed down last week in Case T-418/03La Mer Technology v OHIM - Laboratoires Goëmar (LA MER).

On 1 April 1996 - the day the Office for Harmonisation in the Internal Office opened for the receipt of Community trade mark applications - La Mer applied to register as a CTM the words LA MER for ‘bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils, cosmetics, hair lotions; dentifrices; toiletries’ in Class 3. Goëmar opposed, pleading a likelihood of confusion with its own earlier French, Greek, UK and international registrations of the LABORATOIRE DE LA MER word mark in Class 3 and various other classes, basing its opposition on cosmetics with a marine base and challenging La Mer's registration in respect of ‘soaps for the care of the human skin and the human body; perfumery, essential oils, cosmetics, hair lotions; dentifrices, toiletries, including creams, gels and lotions’.

La Mer asked for proof of use of the earlier trade marks on which the opposition was based. Goëmar submitted various documents to show that it marks had been genuinely used in Greece, France, Italy, Portugal and the United Kingdom, following which the Opposition Division upheld the opposition, even though the degree of use was arguably very small. For reasons of procedural economy, the Opposition Division based its decision on the French registration alone, considering it sufficient for the purpose of rejecting the application in relation to all the goods in question. The Board of Appeal dismissed La Mer's appeal and La Mer appealed.

* "To examine whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. In addition, the turnover and the volume of sales of the product under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the relevant market. As a result, the Court has stated that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore be sufficient to be deemed genuine, provided that it is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark" (para.57).

* " ... it is not possible to determine a priori and in the abstract what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule, which would not allow OHIM or, on appeal, the Court of First Instance, to appraise all the circumstances of the dispute before it, cannot therefore be laid down ... " (para.58).

* "the Board of Appeal was entitled to conclude that the conflicting signs, each considered as a whole, are similar by taking into account in particular the fact that the only element of the mark applied for and the distinctive element of the earlier mark are identical ..." (para.127).

The IPKat can imagine how frustrated La Mer must be: eleven and a half years from its date of application and it is still blocked by an earlier trade mark which has, it appears, been little used. But the failure of Goëmar to make greater commercial use of its trade marks is a commercial decision that it is entitled to make. Merpel adds, one feels that there may have been a better way to resolve this dispute and that, if there wasn't, La Mer would have been better advised to choose a different trade mark and just get on with life.

European Court of Justice ruling in C-259/02 between the same parties:

"1. Articles 10(1) and 12(1) of .. Council Directive 89/104 ... must be interpreted as meaning that there is genuine use of a trade mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by that mark. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real in the course of trade, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark. When it serves a real commercial purpose, in the circumstances cited above, even minimal use of the mark or use by only a single importer in the Member State concerned can be sufficient to establish genuine use within the meaning of the Directive.

2. While ... Directive 89/104 makes the classification of use of the trade mark as genuine use consequential only on consideration of the circumstances which pertain in respect of the relevant period and which predate the filing of the application for revocation, it does not preclude, in assessing the genuineness of use during the relevant period, account being taken, where appropriate, of any circumstances subsequent to that filing. It is for the national court to determine whether such circumstances confirm that the use of the mark during the relevant period was genuine or whether, conversely, they reflect an intention on the part of the proprietor to defeat that claim".

Friday, 28 September 2007

The September/October issue of the World Trademark Review, published bimonthly by Globe Business Publishing, leads with a cover story by staff writer Liz Rutherford-Johnson on the management of the Gallo winery intellectual assets. Other features include a critical analysis by the IPKat's friend Ethan Horwitz and Ethan's colleague at King & Spalding Jill Wasserman on the US trade mark dilution litigation over BUKHARA (ITC v Punchgini). This Second Circuit case is under appeal. Ethan and Jill - who acted for ITC - think it's wrongly decided and that, if it's right, the US is in breach of its international obligations in respect of the protection of famous marks. This blogger, who thinks the decision is right, awaits the appeal with interest. Kenyon & Kenyon, who acted on the other side, unsurprisingly think so too.

Oh, dear, the Kat's a bit late with this one, because it has been out for a while now - it's the September issue of Informa's near-monthly Trademark World. So what's in it? Cover story is by Freshfields Bruckhaus Deringer's very own Giles Pratt, who discusses various diseases that afflict the well-being of the internet - domain name tasting, joy-riding, kiting (this bit of the IPKat hadn't heard that term before) and spying. For the uninitiated, kiting is a more advanced form of domain name tasting in which tasted domain names are recaptured as soon as they have been returned.

Other topics addressed in this issue include an insight by Peter Jennings (Cripps Harries Hall) into the much-discussed spat between KFC and the Tan Inn, a Yorkshire public house that persisted in using the term "Family Feast" to describe its Christmas luncheons, notwithstanding KFC's registration of that term for foods and restaurant services by the fast-food giant (see IPKat post here); also IPKat blogger Jeremy's friend and old colleague Carina Badger (Macfarlanes) ponders over the eternal question in EU trade mark law: does an allegedly infringing act have to constitute "trade mark use" before it infringes a trade mark?

The September issue of Managing Intellectual Property, published ten times a year by Euromoney, carries a powerful question-and-answer session with former MARQUES chairman Tove Graulund, now manager of trade marks and legal at Zacco, Denmark. The theme of the discussion, "What is the future for fees?", is a subject on which Tove has long held strong views. In short, she believes in the following propositions:

* users of registration systems are entitled to expect those systems to be efficient and cost-effective;

* there is no justification for governments raking off trade mark and other IP fees to subsidise non-IP activities, while national offices are under-resourced and need funds to maintain and improve their services to users;

* creaming off surplus fee income from running the Office for Harmonisation in the Internal Market is not a solution to the general funding issues - especially since OHIM fees should be set by reference to its budgetary needs, not the need to make up the shortfall of investment in national offices.

The IPKat hopes that a future issue of MIP will carry an interview with some important person who is prepared to disagree with her publicly, since he hasn't yet seen a reasoned response to anything Tove has said and his little cat-sized brain can't fathom out why her views are supposed to be so heretical.

Last but by no means least is the early arrival of the October issue of the European Intellectual Property Review, published monthly by Sweet & Maxwell. Like Trademark World, the EIPR carries a piece on trade mark use - this time, by Hong Kong University's Po Jen Yap. It's quite fun to contrast the approaches taken by the respective authors if you get the chance: it is not surprising that a European practitioner, writing almost from the battlefield, and an Asian scholar examining the cases with clinical objectivity will take very different routes even when reaching broadly similar conclusions.

Above right: how about a companion journal for Trademark World, Patent World and Copyright World, but this time focusing on the needs and interests of infringers themselves? Would Patricia Loughlan (see below) approve?

Also in this issue is a highly provocative and well argued piece by Patricia Loughlan (University of Sydney) on the impropriety of the use of the word "theft" to describe acts of intellectual property infringement.

Thursday, 27 September 2007

The revised version of the European Patent Convention will enter into force on 13 December 2007 for sure. This will be two years to the day since Greece was the 15th state to ratify EPC2000. Since there is now less than three months to go before this date, and not all signatory states have ratified, the date is now fixed (if the IPKat's calculations are correct).

Time is therefore getting rather short for the remaining countries to ratify, which they must do before 13 December to prevent being automatically ejected from the EPC altogether (Article 172(4)). These countries are, from a check on the EPO website, Cyprus, France, Germany, Italy, Luxembourg, Portugal, Sweden and Turkey.

Given that the consequences for not ratifying are so serious, it is practically unthinkable that any of them would come in late. The IPKat idly wonders what would be the effect if Germany, the de facto “home” of the EPC, failed in their duty. All sorts of cats would be set amongst all sorts of pigeons, he suspects.

Just for a bit of fun, which country do you think will be the last to ratify? Do please cast your vote on the new IPKat sidebar poll, where you can also check when IPKat readers think France will do the right thing and let the London Agreement enter into force (not as soon as the EPO thinks, by the look of it).

Wednesday, 26 September 2007

The IPKat is pleased to remind his readers of the Annual OHIM Award 2007/2008 for the best dissertation in the field of Community trade marks and designs. The good news is that

"The prize, which is organised and financed by the OHIM, awards EUR 15,000 to the author of the winning dissertation and EUR 7,500 to the author of the second best dissertation. Both of the winning authors will have the opportunity to complete a five-month paid traineeship in an OHIM department.

Right: Oliver is a prize-winning cat. Modesty forbids him from boasting about what he wone his prize for, but he is reputed to be very popular with the ladies.

The competition is open to graduates who have studied or are studying a post-graduate course in one of the Member States of the European Union. The course must include subjects related to Community industrial property.

The programme has three main objectives:

* Promoting and encouraging at university level, a better knowledge of Industrial Property Rights;

* Fostering and deepening relations with European education institutions and research centres in the field of Industrial Propriety;

* Encouraging students to acquire professional expertise in the fields of Community trade marks and designs".

The dissertation must be an in-depth analysis of a subject related to Community trade marks and designs.

It must be a minimum of 40 pages and a maximum of 70 pages (approximately 30 lines per page, font size 12, excluding footnotes).

Left: Kat of letters (available from Library of Congress shop)

It must be written in one of the five languages of the OHIM and printed on one side of the page only, in A4 format. However, in order to facilitate the work of the Jury, all dissertations not written in English must be submitted with an English translation [the IPKat adds - European Court of Justice, please take note!].

Dissertations should not include any annex or other document, such as slides, audio-visual material etc.

The first page of the dissertation must contain the following "Solemn declaration" (Annex 2 of the Application form):

‘I solemnly declare that the present dissertation has been written for this competition by myself and without any external help not explicitly authorised. I solemnly declare that the ideas, paragraphs and other extracts taken from or inspired by external works and the bibliographical references used have been cited accordingly.’

The dissertation must be unpublished and original and must be submitted together with the assessment completed by a supervisor in the educational establishment where the applicant is carrying out or has completed the post-graduate course. The supervisor should use the assessment form drawn up by the OHIM (Annex 1 to the Application form).

The deadline for submission of applications is 15 December every year. Any dissertation which arrives at the Office after this date, as evidenced by the postmark, will be considered inadmissible for that year’s annual prize".

The IPKat understands that the UK committee for the AIPPI (the International Association for the Protection of Intellectual Property (UK website here) is seeking to widen its membership, in particular by securing greater participation from those law firms and companies that do not currently possess any members of AIPPI.

Right: a small but representative sample of the blue-and-white artwork that decorates the AIPPI UK website

This group considers issues relating to all aspects of IP law and practice, with emphasis on what the law is at present and how it could be developed in an international context. As part of this exercise, it considers a number of questions each year, which are then discussed at an international meeting. For example, this year, the meeting is in Singapore and the questions are:

Q193: Divisional, Continuation and Continuation in Part [of Patent] ApplicationsQ194: The Impact of Co-Ownership of Intellectual Property Rights on their ExploitationQ195: Limitations of the Trademark Protection.

Next year, the meeting will be in Boston, USA, and the questions are:

Q202: The impact of public health issues on exclusive patent rightsQ203: Damages for trademark infringement through counterfeiting and piracyQ204: Liability for contributory infringement of IPRsQ205: Exhaustion of IPRs in cases of recycling or repair of goods.

Answers to these questions are prepared by each national group during the Spring for collation and presentation at the Autumn meeting. In addition, the AIPPI hosts a number of lectures each year, to which prominent international speakers are invited, for example from the Commission, the EPO, OHIM and the ECJ. These are probably the highest calibre lectures on IP in the UK [this is what the UK AIPPI Committee says. The IPKat, who has not been invited to address this group, reserves judgment ...].

Members comprise solicitors, barristers, trade mark and patent attorneys, and in-house counsel. The group also holds a rather good champagne reception every July. Any reader of this post interested in joining (the membership fee is currently £100 pa), should not hesitate to email Michael Edenborough for more information.

MMI Research Ltd v Cellxion Ltd and others (Patents Court, Mr Justice Mann, 24 September, noted by the subscription-only LexisNexis Butterworth service) is the story of a business, five adversaries and its own worst enemy - read on to find out who that might be.

MMI first sued the fifth defendant in Germany for patent infringement, then sued the first four defendants in the United Kingdom. Those defendants denied infringement and challenged the patent's validity. The documents disclosed to the defendants included an English document, which MMI believed to have been filed in the German proceedings, as well as a German document which was believed to be a translation of it. Some months later, having spoken to its German counterpart, MMI's solicitor discovered that the English document was in reality a draft of pleadings that had not actually been filed in the German proceedings. MMI sought an order preventing further use of that document on the ground that it was a privileged document that had been disclosed by mistake.

On the assumption that the document was indeed privileged and had been disclosed by mistake, an issue arose as to whether there had been any waiver of privilege in respect of it. According to MMI, the defendants’ solicitor must have appreciated that the document had been disclosed by mistake. Even if he hadn't, it should have been obvious to a reasonable solicitor that an error had occurred.

The defendants’ solicitor gave an undertaking to the effect that, when the English document had been listed and received, it had not realised that such a mistake had been made.

Mann J held that privilege had, on the facts, been waived. The test was not whether, having done a detailed comparison of the documents and made further enquiries, the mistake was apparent, but rather of whether the mistake was obvious. Here it could not be established that the receiving solicitor had realised that a mistake had been made: the nature of the material received was such that it would not have been obvious to a reasonable solicitor that a mistake had been made. After all, it wasn't even obvious to MMI's own solicitor that a mistake had occurred until after it consulted the German lawyers.

The IPKat says, mistakes of this nature don't only occur where foreign-language documents are involved. Poor labelling and obscure draftsmanship can cause mistakes of this nature even where documents are in the normal language of the parties themselves. Merpel says, yes - but there's something rather uncomfortable about the thought that the outcome of patent infringement litigation might turn on something as unrelated to the legality of the alleged infringing acts as is the state of the claimant's mind. Both Kats add: it seems somehow ironic that the victim of this slip is a company that specialises in (as its logo states) "communications and security solutions".

The Intellectual Property Watch weblog carried an absorbing feature yesterday on the increasingly-youthful WIPO Director General Kamil Idris. It writes, in relevant part:

"The member states of the World Intellectual Property Organization on Tuesday reached an agreement on how to address concerns raised about Director General Kamil Idris during this week’s annual General Assembly.

According to participants, a broad agreement was struck to set up a “Friends of the Chair” group on the issue. The chair of the assembly, elected at the outset, is Martin Ihoeghian Uhomoibhi, the ambassador of Nigeria to the United Nations, who is expected to invite various ambassadors to form the group, which should report back during the assembly. Uhomoibhi did not specify to the assembly how he would make his selections, nor how the process would work.

There appears to be some confusion among member states on the details of the group. Participants said they expect the group will read and discuss reports and information from recent years that found possible wrongdoing on the part of Idris, the most poignant being a confidential internal auditor’s report on Idris’ age correction .... In 2006, Idris moved to change his birth date from 1945 to 1954 in the WIPO records after 24 years. The chair’s friends group would report back to the assembly with recommendations, and member states would have the right to respond, sources said.

...

The United States appears to be satisfied with the agreement as it would result in a review and discussion of reports of alleged misconduct by Idris that they insist should be addressed. ..."

The IPKat, being famed for his infinite diplomacy and sensitivity to human feelings, declines to comment on this delicate issue, but Merpel says this is a long-winded way of dealing with the situation: why not just have Dr Idris carbon-dated?

Meanwhile, Dr Idris has not been neglecting his duties. WIPO press release PR/2007/517 heralds news of the accession by the European Community to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. This means that cheap, easy international design registration is now within the grasp of everyone in the European Union - at least in theory. Says the press release:

"The Director General of the World Intellectual Property Organization ..., Dr. Kamil Idris, welcomed the accession by the European Community ... to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, which offers businesses in all participating countries a simple, affordable and efficient way of obtaining and maintaining their industrial designs.

"The accession of the European Community marks a milestone in the development of the Hague system for the international registration of industrial designs. This is a major step towards broadening the geographical scope of the international design registration system", said Dr. Idris [the IPKat wishes he had a Swiss franc for every time the words "milestone" and "major step" are deployed in press statements]. He added “The accession of the EC creates an interface between WIPO’s international industrial design operations and those of the EC’s industrial design system allowing users to obtain protection in the whole of the EC as well as the other members of the Geneva Act of the Hague Agreement by filing one single application for the registration of their industrial designs.”

Such an international registration will have effect in as many members of the Geneva Act as identified in the application for registration, except those that refuse protection within the required time-limit. If protection is not refused by the EC’s industrial design office, the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM), protection of the industrial designs in question will be effective in all 27 EC member states just as if the applicant had applied or registered directly with OHIM.

The EC’s instrument of accession was deposited with the Director General of WIPO on September 24, 2007 and its accession will become effective as from January 1, 2008.

... The EC is the 47th member of the Hague system.

The Geneva Act ... enhances the Hague system by making it more compatible with the procedures for the registration of industrial designs in countries such as the United States and Japan where protection of industrial designs is contingent on examination to determine the acceptability of an application.

Mr. Ernesto Rubio, Assistant Director General of WIPO responsible for questions relating to industrial designs, also underlined the importance of EC accession and referred to a new e-filing system which is due to be launched in January 2008. He said, “WIPO has developed, in co-operation with OHIM, an e-filing system that is expected to greatly facilitate the filing of industrial applications and will be introduced under the Hague system from January 1, 2008, the date on which also EC membership takes effect.””

The IPKat will be pleased to see the Brussels-Hague axis bearing fruit. Merpel says, what do you mean, fruit? We're talking about design registration, not plant varieties.

Tuesday, 25 September 2007

Better late than never, says the IPKat as he posts this note on the fortnight-old Community trade mark appellate decision by the European Court of Justice in Case C‑234/06 P, Il Ponte Finanziaria SpA v OHIM, FMG Textiles Srl.

In 1998 Marine Enterprise Projects (now FMG) applied to register as a Community trade mark a figurative sign the main components of which were the depiction of a roll of cloth, unfurling to take on the form of the sail of a small sailing boat, against a thick horizontal line above which the word ‘Bainbridge’ appears in cursive lettering. Registration was sought for goods in Classes 18 (leather, imitation leather, animal skins, hides; trunks, cases etc) and 25 (clothing, footwear, headgear).

Ponte opposed, citing a number of its earlier Italian trade marks and arguing a likelihood of confusion. These were, effectively, the word mark THE BRIDGE and two families of marks, one figurative and one three-dimensional, for similar goods. The OHIM Opposition Division rejected the opposition on the basis that none of Ponte's marks was sufficiently similar to the applied-for mark. The Board of Appeal agreed, ruling that the principle of interdependence between similarity of goods and signs (i.e. the more similar the goods were, the less similar the marks needed to be in order to establish a likelihood of confusion) was irrelevant here since there was not even a minimum degree of similarity between the parties' respective marks.

Ponte appealed to the Court of First Instance, which dismissed the appeal. In the CFI's view

* it was only when the Board of Appeal examined the argument that there was a ‘family of marks’ that it established that only two of those marks had been put to use and could therefore be taken into account in that assessment. The Board had however expressly affirmed that those earlier trade marks were not individually subject to proof of use because the five-year period following their registration, during which use must be proved, had not yet elapsed. It therefore concluded that those six earlier marks had to be taken into consideration for the purpose of assessing the existence of a likelihood of confusion with the trade mark applied for.

* So far as the likelihood of confusion with a 'family' of marks was concerned, the Italian consumer was actually confronted on the market with only two of those earlier marks, with the result that the extended protection claimed by the appellant, connected with the existence of an alleged ‘family of marks’, was not justified in this case.

* The earlier mark THE BRIDGE could only be regarded as being in genuine use if it was objectively present on the market in a manner that was effective, consistent over time and stable in terms of the configuration of the sign. Such genuine use of that trade mark in question had not been proved.

* As to the other earlier trade marks that were not taken into account for the purposes of assessing the likelihood of confusion, the Board of Appeal was entitled to reject what were described as the ‘defensive’ registrations of those marks, since the effective function of the trade mark registration is protect marks that are registered so that they will be used, not so that they will only exist to prevent registration by others.

* Ponte's marks were only remotely similar to FMG's, whether taken individually or en famille.

Ponte then appealed further to the European Court of Justice, which dismissed the appeal on more grounds than this posting indicates. Said the ECJ:

* the CFI's assessment of similarity of the marks was well-based and the ECJ cannot substitute its own assessment of the facts for that of the CFI;

* the CFI was entitled to conclude that the fundamental lack of similarity of the respective marks was not offset, when assessing a likelihood of confusion, by the high degree of similarity of the respective goods;

* " 61. ... a trade mark may be registered only individually and the minimum five-year protection afforded by such registration is conferred on it only as an individual trade mark, even where several trade marks having one or more common and distinctive elements are registered at the same time".* "64. ... no consumer can be expected, in the absence of use of a sufficient number of trade marks capable of constituting a family or a series, to detect a common element in such a family or series and/or to associate with that family or series another trade mark containing the same common element. Accordingly, in order for there to be a likelihood that the public may be mistaken as to whether the trade mark applied for belongs to a ‘family’ or ‘series’, the earlier trade marks which are part of that ‘family’ or ‘series’ must be present on the market".

The IPKat is sure this analysis must be right. There will surely be cases in which, on the facts, the level of similarity (i) between the different marks within the same family and (ii) between the family marks and the 'gatecrasher' is high enough to get the opposition to the starting line and where (iii) the degree of use of all the family members is strong enough for consumers to draw the wrong conclusion whenever they see an interloper, assuming it to be part of the family too. But this case was never going to be the paradigm. Merpel adds, but look how useful a fatally flawed opposition can be. The opposed application was filed nine years ago yesterday: look how much uncertainty has tainted the brand's future for nearly ten years.

An Intellectual Property Mediation Theatre is being held on Wednesday 17 October 2007 at 4.30 for 5.00-7.00pm, followed by networking and drinks until 8.00pm. The venue is the London pad of the UK Intellectual Property Office, Harmsworth House, 13-15 Bouverie Street, London EC4Y 8DP. According to the publicity material,

"This session is designed for those who are interested in the mediation process and would like to see how it operates in practice, particularly in light of the Gowers Report on Intellectual Property [which, says the IPKat, says practically NOTHING USEFUL AT ALL about designs, but backs better use of means other than litigation for resolving disputes]. It is also intended for those who wish to learn about mediation as a real alternative to litigation in dispute resolution".

Driving this event are leading mediation services provider CEDR and the increasingly useful ACID (Anti Copying In Design), the highly active UK IP trade organisation for designers and manufacturers. ACID-accredited law firm Hammonds is buying the drinks, so the fee of £30 plus £5.25 VAT is being levied to cover the overheads (what's that, asks Merpel: umbrellas, parasols, fake Burberry caps?)

For more information or to book a place email Faith Hardman or phone her on + 44 20 7536 6000.Theatre of Dreams hereTheatre of Nightmares here

Amid all the excitement of the past few days the IPKat quite forgot to congratulate Christopher Floyd QC on his appointment as judge in the Patents Court - part of the Chancery Division - in England and Wales. Christopher, of 11 South Square, has practised in all fields of intellectual property law, with particular emphasis on patent cases in all technical disciplines.

The IPKat and Merpel join in respectfully wishing him the very best of luck in his new appointment, with the hope that he will take a ruggedly interventionist and proactive role in case management for the benefit of all disputing parties. Christopher's greatest hits include

The IPKat's scholarly friendChristopher Stothers sent him a little while ago a note on the Advocate General's Opinion in Case C-201/06European Commission v France. This opinion has been posted on the Curia website in Slovene, Estonian and eight other minority languages including French, German, Italian and Spanish - but alas not in English. Christopher informs the Kat as follows:

"In essence, France requires that plant protection products (pesticides) have a common origin if they are to benefit from the simplified marketing authorisation process. If not, they have to go through the full authorisation process. The Commission took the view that this breached Articles 28-30 but the Advocate General has rejected the Commission's case and supported France (who were supported by the Netherlands).

This follows the ECJ's judgment in Case C-100/96British Agrochemicals Association but is not consistent with the subsequent approach taken by the ECJ in relation to pharmaceuticals in Case C-112/02 Kohlpharma".

Many thanks, Chris!

While UKIPO is looking at the trade mark application process it might consider extending its upcoming patent peer review trial to cover trade marks as well. The United States Patent and Trademark Office first launched the 'Peer to Patent' trial earlier in the summer, and UKIPO is set to follow suit early in 2008 - but has anyone yet considered using this collaborative technology to bring similar expertise to the trade mark application process?

The IPKat's friend Martin Farley, who recently floated this idea at a meeting with OHIM (the EU's trade mark and design granting body) was surprised to find a high degree of interest. Martin said

"Using the peer review model could bring some benefits to a community trade mark application, particularly during the relative phase. If OHIM, with much greater restrictions on what it can use in reaching its decision on CTM applications, could consider a use for such community-wide collaboration, then there is no reason why UKIPO couldn't too."

Given that there is now a suggestion that peer review could become a compulsory feature of the patent application process in the USA, perhaps it is time to consider its value in other areas of the IP world. If anybody has come across similar plans made or ideas expressed by other IP bodies, why not let the IPKat know?

Monday, 24 September 2007

The IPKat, a great admirer of the late Dorothy Parker's wit, is fascinated by the report in today's Telegraph that publisher Penguin is involved in litigation over the great lady's writings - if not her copyright. The story goes like this. In 1994, one Stuart Silverstein offered Penguin a compilation he had made and edited of Parker's uncollected poems.

Right: the late, lamented Dorothy Parker

Penguin did not want to publishe it as it stood but offered him US$2,000 for the right to include Silverstein's work in its Complete Poems collection. Silverstein declined and opted instead for another publisher, Scribner, which published the lost poems compilation with his introduction in 1996 under the title Not Much Fun: The Lost Poems of Dorothy Parker.

In 1999 Penguin's Complete Poems book came out, featuring a section called "Poems Uncollected by Parker". Silverstein alleges the section is copied "comma by comma" from his own work, without acknowledgement. Penguin says it owes Silverstein nothing since all he did was compile a collection of works that were already in the public domain. The company concedes that Silverstein's collection was a source, but says its editor arranged the poems in a different order and even removed one that Silverstein included in error. Judgment is hoped for, if not necessarily expected, by Christmas.

Without possession of the facts the IPKat would not wish to rule on this dispute. He recalls however that compilations of even public domain works are capable of attracting copyright in their own right, so long as some individual creativity has gone into the act of compilation - and he's sure that editing a public domain work can also attract fresh copyright. Either that, or a lot of new editions of old music would be free for all (cf the Hyperion dispute, noted by the IPKat here, here and here). Merpel suspects that Penguin, Scribner, Silverstein and their respective lawyers will all make a good deal more money out of these poems than Dorothy Parker ever did.

Feeling enterprising and want to sue someone? If so, the Enterprise Act 2002 (Disclosure of Information for Civil Proceedings etc) Order 2007 (SI 2007 No. 2193) comes into force on 1 October 2007 in the United Kingdom and it might just affect you. The story goes like this. Part 9 of the Enterprise Act controversially restricted the disclosure of certain information, obtained for the purposes of a criminal prosecution, from being admitted in civil proceedings.

Left: Spock returns to the Starship Enterprise, pleased that an apparent inconsistency, if not illogicality, of UK legislation has been resolved

This bar had obvious repercussions for IP litigation, since many species of civilly actionable infringements are also criminal offences. Now a new Section 241A of the Enterprise Act (inserted by section 1281 of the Companies Act 2006) provides that certain specified information may be disclosed for the purposes of, or in connection with,

"proceedings in respect of the rights and obligations of consumers and those relating to or arising out of the infringement or misuse of intellectual property rights".

For these purposes Section 241A permits prescribed information to be disclosed for obtaining legal advice in relation to such prescribed proceedings and otherwise for the purposes of establishing, enforcing or defending legal rights that are or may be the subject of such prescribed proceedings. For these purposes "intellectual property right" includes

The IPKat welcomes the amendment, but deprecates the inelegant and obscure manner in which the new changes are summarised in the Explanatory Note that accompanies the Regulation. He wonders whether anyone who needs an explanation will find it here.

Department for Business, Enterprise and Regulatory Reform paper in response to consultations, August 2007, here

Last week the IPKat briefly recorded the decision of the European Court of Justice in Case C-193/06 PSociété des Produits Nestlé SA v OHIM, Quick restaurants SA. Said the Kat, it looks fascinating in the original French and seems to be something to do with QUICKY and QUICKIES, so he guessed that was probably an opposition. The IPKat has since heard from his learned linguaphile friend Tibor Gold, who writes:

"This is an appeal from the CFI in case T-74/04. Its main interest lies in the rules for comparison of a composite word-and-device mark with a word mark.

The applicant's mark was for the word QUICKY with a drawing of a fairly large rabbit atop. The words and graphics were of, roughly, equal size. The opponent's marks were QUICKIES and QUICK; the goods - in classes 29, 30 and 32 for the one mark and 29, 30 and 42 for the other) were deemed similar below and did not play a substantial role in the ECJ judgment.

The opposition had been upheld by the Opposition Division, the Board of Appeal and the Court of First Instance (CFI). It is the latter's logic that was successfully attacked before the ECJ.

The CFI went about it in this way. While paying lip-service to the global assessment test at the outset of its analysis, it then stated that there is a likelihood of confusion (LOC) where a complex mark, leaving aside the figurative element, has a verbal element which is identical or similar to an earlier word mark unless that word element is subsidiary to the non-verbal element. Once such a similarity between the verbal element is established, the next step, said the CFI, is to examine whether the additional figurative/graphic element is capable of imparting a sufficient visual differentiation to overcome the position established by the word elements, i.e. whether the additional figurative/graphic element is a dominant element of the composite in the mind of the public or whether its distinctinctiveness is equal to or lower than that of the verbal element.

In the actual case, the CFI said that the verbal elements were visually similar and the graphics were not so dominant as to render the verbal element negligible. The ECJ condemned this approach. By stating that the graphics did not render the word element negligible, since the compared word elements were held to be similar the CFI did not in fact perform a global assessment but decided the LOC only on the basis of the word elements.

The ECJ referred to its own decision in the recent Shaker/Limoncello case, C-334/05P, 12/06/07 [see IPKat posting here], saying that it is only when all other components of a complex mark are negligible that it is permissible to make the comparison on the basis of the dominant element - a finding that in this case the CFI did not make.

The case was remitted to the CFI."

Says the IPKat, this approach would seem to be of high relevance to the discussions raging in Germany and in Ipkatland over the recent German decision involving the Kinder trade mark (see earlier post here and comments appended to it).

Sunday, 23 September 2007

BLACA - the British Literary and Artistic Copyright Association - has told the IPKat that David Carson has agreed, en route to Geneva, to stop over in London and give a talk on 1 October on the future of US copyright law. The official title is "United States Copyright Law - Should Europeans Care?"

David is the Associate Register for Policy and International Affairs at the United States Copyright Office. We have also lined up two commentators: Shira Perlmutter, who is the Executive Vice President, IFPI and Laurence Djolakian who is the Legal Counsel for the Motion Picture Association - Europe. Gillian Davies from Hogarth Chambers will be chairing.

Uma Suthersanen, who chairs BLACA, tells the Kat that this is a FREE EVENT. It's being hosted by Bird & Bird in the firm's London office (you can locate it via the map, above right). If you'd like to attend, contact Emma Rumens here.

Although the IPKat left the MARQUES conference in Porto (scroll down for the six earlier posts) a little early, he is still receiving more information about it. He has heard that the Designs Workshop session run by MARQUES stalwart David Stone (Howrey) was officially "sold out" and that even a WIPO official was turned away.

Left: the IPKat found this striking Community design image on the website of Hindle Lowther, Edinburgh

The background to the workshop was that it sought to introduce the MARQUES report on the first 150 invalidity decisions by OHIM on RCDs - registered Community designs (see earlier IPKat postings here and here).

David has told the IPKat that the MARQUES Designs Team will be updating the report (there are now over 400 invalidity decisions, including 60-odd appeals to the Boards of Appeal), with the plan of launching the update at the Barcelona Winter Meeting (next year - but there are not yet any details on the website). Says David:

"If any IPKat reader has suggestions on ways to make the report more useful, please get in touch. For example, we will be dropping many of the statistics - they were time-consuming to collect, and not helpful (other than perhaps for prurient interest)".

The workshop discussion was wide-ranging and highly engaged. Issues discusssed included:* should logos really be registrable as RCDs? (the consensus answer was yes - but some care will be needed not to restrict the value of designs for 3D objects just to keep logos in line);* should RCDs be invalidated for non-use after a given period? (NO!);* should we all be engaging with the RCD system more, particularly our US colleagues? (YES!);* should practitioners use the verbal description when filing an RCD? (no).

The IPKat has the PowerPoints for this session and suspects that serious students of the subject might just like to take a look at them if you drop him a hint.

Friday, 21 September 2007

The UK-IPO have announced they intend to introduce new 'fast track' procedures for both patent and trade mark applications. Robert Ibrahim of the grandly-titled Intellectual Property & Innovation Directorate, writes:

"The Gowers Report on Intellectual Property recommended that the UK Intellectual Property Office provide new accelerated services for processing patent and trade mark applications. We have considered these recommendations and are now consulting on proposed new fast track services for patents and trade marks, both of which will be available to all applicants upon payment of a fee.

The intention is to deal with, on request, trade mark applications within 10 business days and patent applications within 9 months.

The IPKat thinks that this all sounds great in principle, but there are often very good reasons for not wanting patent applications to be granted too quickly, section 2(3) being one of them. And isn't the UK office pretty quick anyway nowadays, given that much of their work is being drawn away to Munich (or The Hague) and Alicante?

Merpel wonders why the Chartered Institute of Patent Attorneys are not being consulted on this one. Was it something they said?

Thursday afternoon found the IPKat attending two worthy Workshop sessions at the MARQUES conference. First was Ben Goodger (right, Rouse & Co, International) on "Managing and Nurturing Your IP". This session focused not only on what businesses need to know when practising the art of intellectual asset management but also how professional advisers need to get it across and what sort of resistance they might meet. Next came "Abuse of Trade Marks by Third Parties (undesirable association, parody and other misuses)", a double-header led by Marieke Westgeest (Markenizer, the Netherlands) and Massimo Sterpi (Studio Legale Jacobacci, Italy). This session led to some vigorous expressions of difference of opinion as to the best course to take when your brand is appropriated by chavs, right-wing louts or - in the case of Cristal Champagne - hip-hop artists and rappers. Although Benelux has special laws that provide redress for trade mark owners when the reputation of their marks is groundlessly damaged even by use other than regular trade mark use (an option offered by Article 5(5) of the harmonisation directive), it may be better to laugh off the damage or counter it with a well-planned marketing exercise.

And so to the Gala Dinner: the location was Porto's former Customs House on the bank of the river Douro, but the happy diners demonstrated some fairly jolly customs of their own. The IPKat is proud to announce that his paper aeroplane flew further than that of the other occupants of Table 9.

Right: The Douro by night

More to the point, he has been asking quite a lot of people a question: "Can you name three things you've gained from this conference that will make you a better trade mark lawyer?" While all his respondents affirmed that they had benefited a great deal from the event, he notes that several of their answers were, like trade mark rights themselves, somewhat intangible. Nxt time, he promises, he'll ask them before the wine is served.

The IPKat's good friend Birgit Clarkhas sent him news from Germany of an important and somewhat controversial decision, summarised in a press release from the Federal Supreme Court (Bundesgrichtshof/BGH), the First Senate of which is responsible for trade mark cases. In two recent decisions that court had to determine the extent of trade mark protection for the Kinder trade mark for products made of chocolate. According to the press release,

"The claimant, the sweets producer Ferrero, is the proprietor of several registered ("graphically designed") device marks, some of them colour marks, which all contain the word element "Kinder" ("children") and are protected inter alia for chocolate. The first case was about an injunctive relief with which Ferrero tried to prevent the sweets producer Haribo to offer (inter alia) confectionery, bakery and pastry products under the trade mark "Kinder Kram" (literally "kid's/children's stuff")

The Higher Appellate Court of Cologne (Oberlandesgericht Köln) did not see a violation of the trade mark rights of Ferrero after the Bundesgerichtshof had already overruled an earlier decision of the Cologne court in 2003, which had seen the case differently (and had considered the marks similar).

Der Bundesgerichtshof has now confirmed the decision of the Cologne court and dismissed the case. It confirmed that the mark "Kinder Kram" did not violate the rights in the mark "Kinder". According to the Bundesgerichts the claimant could only claim protection for the graphic/device design elements and the colourful composition/design of some of their marks. The word element "Kinder" on its own, however, did not enjoy trade mark protection per se according to the BGH, due to its "descriptive nature" in the eyes of the relevant consumer group. The claimant's device/colour marks "Kinder" and the defendant's word mark "Kinder Kram" are not similar in the eyes of the court.

In the second case, again based on Ferrero's earlier registered trade marks for "Kinder" the defendant was a producer of dairy products who intended to bring out a new milk desert under the mark "Kinderzeit" ("children's time"). Ferrero's intentention was to ban the use of the mark in advertisement and on packaging. While their claim was successful in the lower court, the Higher Appellate Court of Hamburg (Oberlandesgericht Hamburg) dismissed their claim. The Bundesgerichtshof confirmed this ruling and stated that there was no similarity between the design mark "Kinder" and the word mark "Kinderzeit""

Birgit is not so convinced: she observes that "Kinder" has always been a well-known mark for chocolate, especially for children and lovers of chocolate. This being so, members of the relevant German consumer group would always see the element "Kinder" as the relevant and dominant element and think that whatever was offered was a new product of the Kinder range by Ferrero. Next to the word "Kinder" the design elements would not be considered dominant, even though they are quite distinctive.

The IPKat says, this problem always arises with word-and-device marks: the scope of protection will always be limited by the fact that it is the visual image that is registered rather than the word itself, while the word is the normal means by which the consumer refers to the product.

Thursday, 20 September 2007

G-Star is the owner of a Dutch trade mark consisting of the shape and stitching of jeans. Benetton produced jeans similar to G-Star’s, and G-Star brought an infringment action. Benetton counter-claimed for invalidity, arguing that the shape in question gave substantial value to the goods and was therefore barred from registration. G-Star responded that the shape had acquired distinctiveness though an advertising campaign which pre-dated its registration.

The Hoge Ra’ad referred the following questions to the ECJ:

(1) Must Article 3(1)(e), third indent, [of the Directive] be interpreted as meaning that the prohibition contained therein permanently precludes the registration of a shape as a trade mark where the nature of the product is such that its appearance and shaping determine its market value entirely or substantially as a result of their beauty or original character, or does the prohibition not apply where, prior to the application for registration, the attractiveness of the relevant shape to the public has been determined predominantly by the recognition of it as a distinctive sign?

(2) If the answer to Question 1 is to the latter effect, to what extent must this attractiveness have prevailed for the prohibition no longer to apply?

The ECJ answered that a mark barred from registration under the third indent of Art.3(1)(e) cannot be registered in reliance on Art.3(3) if, prior to registration, the mark has acquired distinctive character through use. This was apparent from the facts that: (a) Art.3(1)(e) was not mentioned in Art.3(3) and (b) the ECJ had previously said in Philips v Remington that, under no circumstances could a mark barred under Art.3(1)(e) be registered by virtue of Art.3(3).

The ECJ’s approach makes the answer to the question look obvious. However, the referred question is a bit more subtle. How frequently will the shape of goods really be truly inherently attractive, and how often will be attraction just come from the fact that the goods are the latest ‘cool’ status symbol, that ‘coolness’ originating not from the inherent shape, but from the fact that the manufacturer has, through advertising, whipped up a a cult following? It would have been useful if the court had spent its time explaining the meaning of the third intent of Art.3(1)(e) (‘a sign which consists exclusively of the shape which gives substantial value to the goods’), but that wasn’t squarely in the referred questions, and will have to wait for another day.

Why do young people infringe IP rights? Is it the result of ignorance, indifference, cost-effectiveness, anti-corporate sentiment, a feeling that the IP owners have already made enough profit, or what? This was the theme of the Thursday morning MARQUES conference programme's opening session, chaired by Tan Loke Khoon (Baker & McKenzie, Hong Kong/China).

First to speak was Roberto de Vido (One Man Band Productions, Japan, right), who explained his research into attitudes regarding copying and his empirical research in copyright teaching through the use of "What's it to me?", an ingenious comic book based on video stills (email Roberto here to request this in pdf format). He reaffirmed what many of us have felt for years, that youngesters don't regard IP infringement as theft, that legitimate products were overpriced, that people who claim they haven't the money to buy legitimate goods seem to have the money to spend on expensive trips to Starbucks, etc). His conclusion: much more must be spent on education if the public are to be taught that it's wrong to steal IP.

Roberto was followed by Scott Warren (Kroll, Japan), a lawyer with previous experience working for Sega and X-Box. Scott spoke on why levels of infringement vary so much from country to country: in Japan and Singapore, for example, where brands are loved and affluence is widespread, the level of infringement is low; but in China - new to consumerism - different considerations apply and people in search of the small quantity of genuine product that does exist had to rely on Hong Kong as a reliable location for non-fake products. Nationalism also had a major part to play: the prospect of a distant foreign IP owner losing out, rather than a local business, also plays a part in consumer attitudes. Availability of pirate product is crucial too: if it can be obtained discreetly through the internet, particularly where legitimate product is hard to get, the level of infringement will always be high. Finally, Scott dealt with the enforcement perspective: cooperation with Customs and the deterrent effect of a spell in a Chinese prison (left) may be most efficacious in individual cases.

Andy Leck (Baker & McKenzie Wong & Leow, Singapore, right) concluded this session with a survey of relevant enforcement and sentencing provisions. Can and should juveniles be imprisoned or otherwise punished and, if so, when and how? Should their parents be vicariously liable? Should an element of education be required instead or, or in addition to, other punitive provisions? What about family group conferencing, as tried in Australia and New Zealand?

Andy then reviewed the perception that copyright was over-protected, whether through substantive legal provisions or through digital rights management. Citing Sir Hugh Laddie's thoughts on the subject, he left some of the audience wondering whether they might not actually be performing a public service by doing some infringement and helping lift the dead hand of copyright from the oppressed public.

Following coffee the conference programme focused on current and projected future developments in the international structure of trade mark and design registration, looking at the Madrid-Hague axis. Contributors to this session, chaired by Jochen Hoehfeld (Klunker Schmitt-Nilson Hirsch, Germany), were Ernesto Rubbio (WIPO Assistant DG), José Graça-Aranha (WIPO Industrial Designs Director) and Grégoire Bisson (WIPO Designs Deputy Director). The continued expansion of both systems is a matter of great pleasure to anyone who wants wider geographical protection with less hassle and expense.

The IPKat continues to regret the slow take-up of international filing schemes by national governments. Merpel asks, is this slow take-up the result of too little interest, or too much self-interest?

Note: there will be one final post from Porto, covering the Workshop sessions, before the IPKat returns to London tomorrow.

This morning the Court of First Instance of the European Communities (CFI) published its ruling in Case T-461/04, Imagination Technologies Ltd v OHIM. IT applied to register as a Community trade mark the words PURE DIGITAL for goods in Class 9 and services in Class 38 relating to electronic apparatus and telecommunications and computer-related services. The examiner refused the application on the grounds that PURE DIGITAL was non-distinctive and indeed descriptive for the goods and services in question. The Board of Appeal dismissed IT's appeal. Today the CFI affirmed both earlier decisions.

The IPKat feels that this appeal was always going to fail, since distinctiveness acquired through use was not alleged and, without it, the words in question were a complete non-starter. But what is interesting in this decision is a little argument on the issue of disclaimers and the extent to which, by declining to assert monopoly rights in respect of one or more parts of an applied-for sign, the applicant might just be able to squeeze within the criteria for registration. On this the CFI had this to say:

"61 The applicant maintains that OHIM was wrong to ignore the offer of a disclaimer pursuant to Article 38(2) of Regulation No 40/94 on the ground that the word ‘digital’ is not distinctive. It claims that the inclusion of the word might give rise to doubts as to the scope of protection of the trade mark, in particular whether or not the goods and services could properly be described as digital in nature. ... OHIM should have considered and subsequently accepted the offer of a disclaimer, so as to overcome the harm caused by the circumstances envisaged in Article 38(2) ....

62 OHIM takes the view that the applicant is mistaken both as to the conditions in which Article 38(2) ... applies and the legal consequences thereof. ... the applicant merely refers to the possibility of such a disclaimer or expects OHIM to impose a disclaimer on it.

Findings of the Court

63 Under Article 38(2) ..., where the trade mark contains an element which is not distinctive, and where the inclusion of that element in the trade mark could give rise to doubts as to the scope of protection of the trade mark, OHIM may request, as a condition for registration of that trade mark, that the applicant state that he disclaims any exclusive right to such element.

64 It follows that for that provision to apply at least one of the elements of which the mark consists must be distinctive. As has been established above, both the two elements of which the mark sought consists and the mark considered as a whole are devoid of any distinctive character within the meaning of Article 7(1)(b) .... OHIM cannot therefore be criticised for not considering the offer of a disclaimer within the meaning of Article 38(2) ....

65 It follows from the foregoing that the second plea must be rejected as unfounded".

The ECJ has also delivered its ruling in Case C‑371/06, Benetton Group SpA v G-Star International BV, a reference for a preliminary ruling from the Hoge Raad, the Netherlands, which is noted above.

Finally, posted on the Curia website today is the ruling of the European Court of Justice in Case C-193/06 PSociété des Produits Nestlé SA v OHIM, Quick restaurants SA - it looks fascinating in the original French and seems to be something to do with QUICKY and QUICKIES, so the Kat guesses that it is probably an opposition. The ECJ has annulled the decision of the CFI, anyway. Please can someone let the IPKat know if there's anything of significance here.

The Wednesday afternoon session of this year's MARQUES was rather less taxing than the morning. It opened with a presentation by Erin Hennessy (Time Warner) and Rick McMurtrey (Turner Broadcasting System) on the challenges that session chairman Ken Taylor (Marksmen) would face in seeking to protect and create an online and market presence for the Wee Tot Folk - a merchandable cartoon concept aimed at the four-12 year old consumer. The IPKat thought this was an extremely well-crafted act, carefully scripted, accurately timed, pertinently illustrated and a good blend of serious legal issues and humour.

Right: here's one question that plenty of conference participants were too shy to ask: "what do the letters WTF stand for?"

Merpel has quite a different view: this presentation wasn't going to reveal any issues that an expert audience of IP practitioners weren't already familiar with, which is why over 550 participants couldn't come up with a single question between them -- it should have been part of the entertainment programme, not the conference proper.

The final session of the day was a pretty serious one: a review of legislative and regulatory instruments to protect the young consumer. This panel session, chaired by OHIM's Director of General Affairs and External Relations Joao Miranda de Sousa, featured contributions by two local speakers - Manuela Botelho (Portuguese Association of Advertisers) and Cidalia Almedia (Marketing Manager of the Juice and Drinks Division of Compal). Tackling the ethical issues arising from protecting the young while making them a source of profits, plus the self-interest versus other-interest balance inherent in every type of commercial self-regulation, was guaranteed to generate a good deal of thirst. This in was slaked by the nocturnal visit to Taylor's Port Quinta - the perfect place to sample one of Portugal's best-known products.

Left: Taylor's Port maturing in the casks. Right: OHIM's Ingrid Desrois and Juan Rubio reflect upon the pleasures of a glass of Port.

This weblog recently mentioned the new OHIM Communication on streamlining the bureaucratic side of handling Community trade mark oppositions (see earlier post here). He has since received this comment from a well-informed colleague who prudently chooses to remain anonymous:

"You know what the problem is? All that streamlining is not used to release energy for spending more time on the actual decision but to release people and reduce the OHIM workforce even more. At the same time the average time spent on a single matter (not on procedure but on the legal handling of the case) goes down and down.

Another "novelty" (a code word for "back to the practice in 1997") is that applicants now receive several oppositions to the same application on different days, meaning that they have to manage numerous deadlines at intervals of 1 to 10 days. Sometimes oppositions are notified and deadlines are set before the opposition period is even over. This leads to applicants making efforts to settle one matter only to find out later that an "absolute killer" opposition has also been filed - and that their efforts with respect to the first opposition were entirely in vain. It is difficult to see what OHIM can gain from this apart from embellishing its own statistics regarding the duration of individual oppositions".

The success of many merchandised properties is based as much upon the endearing nature of their characters and personification as on the skill with which their commercial potential is identified and exploited. So when a character appears to "change", this perception may have profound ramifications. Perhaps it is for this reason that Michael Bond - creator of the popular Paddington Bear - has been reported in the BBC as having reacted to criticism over a decision to use the marmalade-loving bear in a TV advertisement for the love-it-or-loathe-it yeast-based Marmite spread.

Right: Paddington in experimental mode - the "P.B." on his case stands for "peanut butter" ...

So why, then, did Paddington and Co, the company that owns the rights to the bear's image, license his use in a Marmite ad? Said a company official:

"Unilever wanted to encourage people to try Marmite in their sandwiches, and they were looking for a character famous for eating sandwiches. The point of the advert is that Paddington always has marmalade in his sandwiches. He simply tries Marmite".

The IPKat is reluctant to swallow this, since he is thinking of the damage that can be inflicted on Paddington's image in the eyes of kids who have been forced to eat Marmite by their parents and deeply detest it.

Left: here's something for Paddybear to try once he's finished with the regular Marmite.

Merpel notes the implication of the above quote: if Paddybear (i) always has marmalade and (ii) tries Marmite, he must have eaten a marmalade-and-Marmite sandwich.

Meanwhile, definitely real but stranger than fiction character Paris Hilton is hitting the IP headlines again, according to this item which Tom Cowling (Swan Turton) slipped into the path of the oncoming IPKat. The fashion celebrity has just filed a lawsuit against greetings card manufacturers Hallmark, alleging that the company used an unauthorised image of her signature phrase "That's hot" on a series of its cards. The card on the right depicts "Paris' first day as a waitress": Hilton's face is superimposed on a cartoon body. This apparition hands a plate to a customer and warns: "Don't touch that, it's hot". The customer asks, "What's hot?" to which Hilton-as-waitress replies, "That's hot". The IPKat can't see what's funny about this. Neither, it seems, could Paris because she's asking for half a million dollars in damages plus injunctive relief. The IPKat awaits further development with unabated indifference.

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Gama and Pal: is the wet-wipe packaging confusingly similar?

Yesterday morning the IPKat posted this item on an ongoing passing-off action, Gama Healthcare Ltd v Pal International Ltd. in which Gama objected that Pal's wet-wipe packaging would lead people to think it was theirs.

When that Katpost went live, there were no examples of the parties’ packaging to show readers. The Kats have since received images of both, which they reproduce below, and they ask readers, through the medium of the sidebar poll below, if they think that Pal's packaging might be mistaken for Gama’s one.

Pal's packs are sold under the Medipal brand and Gama's are sold as Clinell products.

Caveat: this poll is conducted purely for the amusement of readers of this weblog. It is not mandated by the trial judge or commissioned by either party; it is not based on any methodology and it is not intended to have any evidential value at all.

Wet-wipe packaging: do you think you could pick up a packet of Medipal, thinking it was Clinell?

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